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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Split Federal Circuit Panel Affirms BPAI Giving Means-Plus-Function Term Its Broadest Reasonable Interpretation

In re Avid Identification Systems, Inc. (Fed. Cir. Jan. 8, 2013) (nonprecedential)

In this case, a majority of a Federal Circuit panel affirmed a decision by the BPAI rejecting claims as anticipated and obvious where the BPAI construed a claim element drafted in means-plus-function form by giving it the broadest reasonable interpretation.  The patent at issue related to radio-frequency identification ("RFID") tags.

The claims at issue required "means for permanently storing data in an unalterable fashion, said data being known as unalterable data."  The BPAI construed the term "unalterable data" as "data that is not readily changeable" and found that the prior art disclosed this limitation.

Avid argued on appeal that the BPAI erred in this construction, and instead should have determined that the function of the limitation "means for permanently storing data in an unalterable fashion" is "permanently storing data in an unalterable fashion."  The Director responded that the BPAI "simply gave the claims their broadest reasonable interpretation consistent with the specification."

The majority agreed with the Director and BPAI because "there was no consistent, explicit definition in the specification, and there were varied uses of the phrase in the patent, the Board under its broadest reasonable construction practice did not err."

An issue was raised as to whether the decision should be remanded to the PTO for further consideration as the PTO did not examine the "means for storing" clause under 35 U.S.C. § 112 ¶ 6. 

The majority found that Avid "waived that point by failing to specifically argue that alleged procedural fault ... [and while] the Board has previously evaluated § 112, ¶ 6 cases without invoking waiver ... the fact that the Board has on occasion overlooked particular procedural defaults does not mean that it is compelled to waive those procedural requirements for all subsequent cases."  Thus, "the Board's rejection of the claims under the PTO's 'broadest reasonable interpretation' guideline was sufficient to sustain the Board's rejection."

Judge Clevenger dissented, stating that the issue was "whether the Patent Office ('PTO') may use an unaltered broadest reasonable interpretation standard in examining means-plus-function claims, or if these claims must alwasy be interpreted in accordance with 35 U.S.C. § 112, ¶ 6.  The answer is easy."  The dissent then summarized its position on the issue:  "35 U.S.C. § 112, our en banc decision In re Donaldson, the Manual of Patent Examining Procedure ('MPEP'), and past PTO practice are all in agreement:  under § 112, ¶ 6, 'the broadest reasonable interpretation that an examiner may give means-plus-function language is that statutorily mandated in paragraph six.'  In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1189 [sic]) (en banc).  Here the PTO did not analyze the claim under § 112, ¶ 6, and so the only appropriate action is to remand the case to the Examiner with instructions to apply a correct claim construction."  Citing numerous examples of cases where waiver was not found as to construction under § 112, ¶ 6, the dissent concluded that "[t]here is no reason why this case should be treated differently from past instances where the PTO has correctly construed means-plus-function claims."